Israel Trademark Office Rules on Russian Standard

Russian Standard (Russian: Русский Стандарт, Russkiy Standart) Vodka is a major Russian premium vodka brand. The brand was introduced as the “Russian Standard” vodka in 1998 by the Russian Standard company of Roustam Tariko. The Russian Standard, later called Original, vodka established the brand as one of the top premium vodka brands in the Russian market. Its new Russian, Soviet-free identity, turned (unusually for a premium beverage) an advantage in the rapidly developing market of the 1990s Russia. Two years after a successful Russian market launch, international expansion was started. This was accompanied by the launch of Russian Standard Platinum product in 2001 and the luxury brand Imperia in 2004. The original product was re-christened Original. In 2006, a new distillery with 4 million cases/yr capacity was opened in Saint Petersburg.

A recent decision by Deputy Commissioner Jacqueline Bracha related to a slew of trademarks for “Russian Standard” in English or in Cyrillic:“РусскийСтандарт”.

The marks covered clothing in Class 25, tea, coffee, spices and sweets in class 30, beer and non-alcoholic drinks in class 32, spirits in class 33, publicity and business administration in class 35, insurance and financial services in class 36 and science and technology services in class 43.

The patent office refused the marks, arguing that the term Russian was a geographic appellation and thus non-registerable under Section 11(11) of the Israel Trademark Ordinance 1972. The term standard implied authorization from the Israel Standards Institute as per Sections 13 and 14 of the Israel Standards Law 1953. In addition, the registrations in class 33 were preempted by graphical marks showing Vodka labels and also earlier registrations of the word marks.

The Applicants argued that whereas the term Russian per se was generic, it had distinctiveness when part of a phrase and was in no way indicative of a time of good (thus could be considered differently from say, Cheddar, Gouda, Champagne, and the like). Furthermore, the Russian Standard Vodka brand was well-known as being of high quality and had a large following, and this, combined with a significant marketing in Israel had created acquired distinctiveness.

Furthermore, the patent office had previously allowed words such as Russian without raising geographical name oppositions, and so due to fidelity issues, it should be allowed.

There was an attempt to have the English marks allowed on the basis of proof of registration of corresponding marks in their country of origin under Section 16, and to register the Cyrillic marks as being distinctive to the target community of Russian immigrants to whom the mark could be considered a well-known mark under the Paris Convention.

The Israel Trademark Office refused the English marks as the applicant was not identical and refused the Cyrillic marks as the Examiner was not convinced that the marks had acquired distinctiveness as required by Section 8B of the Ordinance.

At this stage the applicants switched representation and the new agents requested a hearing.

The applicants provided evidence of registration in other countries and surveys to establish that the mark was indeed well-known. However, the evidence was submitted for the Deputy Commissioner’s eyes only.

THE RULING

Under Section 23 of the Trade Tort Act, courts are able to initiate or in response to a request, that trade secrets not be published and to set up protocols for submitting information that can be considered as being a trade secret. The court can decide that the public interest overrides. In this regard, the Patent office hearing officer is considered as a court.

Following the guidelines published in a recent decision of the Israel Supreme Court (Appeal 2376/13 Rami Levi Telecommunications vs. Moshe Dahan), the Deputy Commissioner ruled that trade secrets are a type of sui generis confidentiality that the court has to rule on in a case-by-case basis. Since this case was an ex partes action that was not being contested by a third-party having rights to be considered, and since there was a prima facie basis to consider the information as being legitimate confidential data of a commercial nature, she ruled that the specific information would not be published in the present ruling, but should the ruling be appealed, this decision could be reconsidered.

Ms Bracha went on to rule that the the word Russian was inherently lacking in distinctiveness by virtue of it being an indication of origin.

Despite the second word Standard somewhat removing the word Russian from being an indication of where the goods originate, the purpose of the law is to leave such adjectives in the public domain for anyone to use. MS Bracha noted that the applicant had actively abandoned the argument of inherent distinctiveness in the hearing, thereby estoppelling the claim, and she also noted that the applicant had apparently agreed that this line of reasoning was false.

As to acquired distinctiveness, all evidence submitted related to vodka, so the marks for clothing, tea, coffee, spices and sweets, beer and non-alcoholic drinks, publicity and business administration, insurance and financial services and science and technology services were rejected.

However, the marks for Spirits were already registered (Israel trademark number 185130 for Russian Standard, and Israel trademark number 185129 for “РусскийСтандарт”), and so the applications in class 33 were also rejected. The Applicant submitted that there were slight differences in ownership between the two marks, but the Deputy Commissioner rejected this argument since trademarks are supposed to indicate the source of goods to the public.

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